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Jason Smith

CBM2020-00029 (P.T.A.B. Mar. 23, 2022)
Jason Smith

67 Cited authorities

  1. Medimmune, Inc. v. GenenTech, Inc.

    549 U.S. 118 (2007)   Cited 2,620 times   91 Legal Analyses
    Holding "the phrase 'case of actual controversy' in the Act refers to the types of 'Cases' and 'Controversies' that are justiciable under Article III"

  2. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,405 times   519 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  3. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,804 times   164 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  4. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 798 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  5. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 815 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  6. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 722 times   119 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  7. CCS Fitness, Inc. v. Brunswick Corp.

    288 F.3d 1359 (Fed. Cir. 2002)   Cited 970 times   6 Legal Analyses
    Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning

  8. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 537 times   130 Legal Analyses
    Holding a procedure for molding rubber that included a computer program is within patentable subject matter

  9. Content Extraction & Transmission LLC v. Wells Fargo Bank

    776 F.3d 1343 (Fed. Cir. 2014)   Cited 608 times   21 Legal Analyses
    Holding claims directed to the "abstract idea of 1

  10. Berkheimer v. HP Inc.

    881 F.3d 1360 (Fed. Cir. 2018)   Cited 531 times   47 Legal Analyses
    Holding that claims may be treated as "representative" in a § 101 inquiry if a patentee makes no "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim"

  11. Rule 702 - Testimony by Expert Witnesses

    Fed. R. Evid. 702   Cited 27,456 times   279 Legal Analyses
    Adopting the Daubert standard

  12. Section 2201 - Creation of remedy

    28 U.S.C. § 2201   Cited 24,971 times   62 Legal Analyses
    Granting district courts the authority to create a remedy with the force of a final judgment

  13. Section 282 - Presumption of validity; defenses

    35 U.S.C. § 282   Cited 3,930 times   140 Legal Analyses
    Granting a presumption of validity to patents

  14. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,477 times   2268 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  15. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  16. Section 326 - Conduct of post-grant review

    35 U.S.C. § 326   Cited 26 times   23 Legal Analyses

    (a) REGULATIONS.-The Director shall prescribe regulations- (1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; (2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; (3) establishing

  17. Section 328 - Decision of the Board

    35 U.S.C. § 328   Cited 10 times   10 Legal Analyses

    (a) FINAL WRITTEN DECISION.-If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). (b) CERTIFICATE.-If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue

  18. Section 322 - Petitions

    35 U.S.C. § 322   Cited 3 times   1 Legal Analyses

    (a) REQUIREMENTS OF PETITION.-A petition filed under section 321 may be considered only if- (1) the petition is accompanied by payment of the fee established by the Director under section 321; (2) the petition identifies all real parties in interest; (3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including- (A) copies of patents

  19. Section 42.301 - Definitions

    37 C.F.R. § 42.301   Cited 21 times   56 Legal Analyses
    Defining the scope of CBM review

  20. Section 42.1 - Policy

    37 C.F.R. § 42.1   Cited 21 times   29 Legal Analyses

    (a)Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4 , 1.7 , 1.14 , 1.16 , 1.22 , 1.23 , 1.25 , 1.26 , 1.32 , 1.34 , and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part. (b)Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding. (c)Decorum. Every party must act with courtesy and decorum

  21. Section 42.5 - Conduct of the proceeding

    37 C.F.R. § 42.5   Cited 13 times   28 Legal Analyses

    (a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding. (b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension. (c)Times. (1)Setting times. The Board may set times by order. Times set by rule are default and may be modified by order. Any modification of times will take any applicable statutory pendency

  22. Section 42.300 - Procedure; pendency

    37 C.F.R. § 42.300   Cited 13 times   10 Legal Analyses

    (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200 , 42.201 , 42.202 , and 42.204 . (b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221 , shall be construed using the same claim construction standard that would be used to construe the claim in a civil

  23. Section 42.8 - Mandatory notices

    37 C.F.R. § 42.8   Cited 11 times   11 Legal Analyses
    Requiring a party to "[i]dentify each real party-in-interest for the party"

  24. Section 42.6 - Filing of documents, including exhibits; service

    37 C.F.R. § 42.6   Cited 9 times   43 Legal Analyses

    (a)General format requirements. (1) Page size must be 81/2 inch * 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original. (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables

  25. Section 42.302 - Who may petition for a covered business method patent review

    37 C.F.R. § 42.302   Cited 4 times   9 Legal Analyses
    Stating that a petitioner for CBM review must have been "sued for infringement or ... charged with infringement" and then defining only "charged with infringement"

  26. Section 42.205 - Service of petition

    37 C.F.R. § 42.205   2 Legal Analyses

    In addition to the requirements of § 42.6 , the petitioner must serve the petition and exhibits relied upon in the petition as follows: (a) The petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service. (b) Upon agreement of the parties, service may be made electronically

  27. Section 42.304 - Content of petition

    37 C.F.R. § 42.304   3 Legal Analyses

    In addition to any other notices required by subparts A and C of this part, a petition must request judgment against one or more claims of a patent identified by patent number. In addition to the requirements of §§ 42.6 , 42.8 , 42.22 , and 42.24 the petition must set forth: (a)Grounds for standing. The petitioner must demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302 . (b)Identification

  28. Section 42.206 - Filing date

    37 C.F.R. § 42.206   1 Legal Analyses

    (a)Complete petition. A petition to institute a post-grant review will not be accorded a filing date until the petition satisfies all of the following requirements: (1) Complies with § 42.204 or § 42.304 , as the case may be, (2) Effects service of the petition on the correspondence address of record as provided in § 42.205(a) ; and (3) Is accompanied by the filing fee in § 42.15(b) . (b)Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded and the Office